What would the Great Detective have Dr. Watson and the Baker Street Irregulars do with this case? On the eve of the 156th anniversary of the birth of Sherlock Holmes creator Sir Arthur Conan Doyle, the author’s often litigious estate this week hit director Bill Condon and co-distributors Miramax and Roadside Attractions in federal court with a copyright and trademark infringement complaint over the upcoming Mr. Holmes. The estate wants a plethora of unspecified damages from the director and companies plus Penguin Random House and author Mitch Cullen, and it also wants the Ian McKellen-starring movie stopped in its tracks with an injunction before it comes out in the UK next month and on this side of the pond July 17.
“This action for copyright infringement arises from unauthorized copying by Mitch Cullin—in his novel A Slight Trick of the Mind and in the motion picture Mr. Holmes based on the novel—of original Sherlock Holmes stories written by Sir Arthur Conan Doyle (Conan Doyle),” says the jury trial seeking May 21 filing in District court in New Mexico (read it here). “The remaining defendants have participated in copying these protected stories in the infringing movie, have published and distributed the infringing novel and motion picture, and have titled the movie so as to confuse consumers and unfairly trade on CDEL’s goodwill.”
Like the movie it is trying to stop from reaching the big screen, the lawsuit centers on the sunset years of Sherlock Holmes. Citing later stories that are still under copyright, the estate claims that plotlines, overcoming a dislike of dogs and other elements like a retired Holmes possessing “a personal warmth and the capacity to express love for the first time” were used in Cullen’s 2005 book and hence the Condon-helmed film the director and Jeffrey Hatcher adapted. That’s the hook on which they hope to hang the hat of their lawsuit. “Conan Doyle also changed Holmes in later life by giving him a gentleness and kindness Holmes did not possess in public domain stories, the complaint says. “The copyrighted mature Holmes is quite unlike the more clinical and purely rational Holmes described in public domain stories.” What a thing to do on the great author’s birthday, as Mr. Holmes the movie noted online today:
— Mr Holmes (@MrHolmesMovie) May 22, 2015
Last June, the estate got its Herringbone hat handed to it by the Seventh Circuit when a three-judge panel ruled that the Sherlock Holmes character was predominantly in the public domain. Essentially, the estate’s aggressive copyright extension argument was that it held legal sway over the Holmes character until the very last 10 works from after 1923 went into the public domain because the Baker Street resident was not fully complete until then. In the panel’s reject of that POV, Judge Richard Posner slammed the UK-based corporation of Conan Doyle heirs’ desire for “nearly perpetual copyright.”
In an August 2014 hearing, he went further in pounding the estate’s seeking of permissions and license fees for movies like the Guy Ritchie-directed Warner Bros franchise, books, TV shows like Sherlock and CBS’ Elementary, and others based on material that was actually legally freely available to all. With a Holmesian bluntness, Posner called the estate’s tactics on the legally ignorant “a form of extortion.” The estate sought an appeal to the Supreme Court on the matter but last November the High Court declined to hear the case.
Now, even with its comparison to Mr. Holmes and the still-protected final 10 stories, pounding the copyright drum on the pic may prove a difficult nut to crack for the estate with its legal recent history. And, in that knowledge, that is surely why they added trademark infringement to the claims as well. While the Conan Doyle estate has had some serious issues registering most of its trademark attempts Stateside, it is claiming that “by virtue of its consistent licensing of its mark,” common law practices should apply here. The thing is a trademark, if it is being constantly used, can be enforced almost forever – and that’s what the estate wants. The game is afoot!
Benjamin Allison and Paul Bardacke of Santa Fe firm Sutin Thayer & Browne are representing the Conan Doyle Estate in the matter.U.S. Magistrate Judge William P. Lynch and Chief U.S. Magistrate Judge Karen B. Molzen have been assigned the case.